The Complainant is IL Makiage Cosmetics (2013) Ltd. of Tel Aviv, Israel, represented by Tucker & Latifi, LLP, United States of America.
The Respondents are Mark Rumpler / Mordechai Rumpler1 of Long Island City, New York, United States of America and Domains By Proxy, LLC of Scottsdale, Arizona, United States of America. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2015. On December 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 18, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 6, 2016 providing the registrant and contact information disclosed by the Registrar, and informing the Complainant of an administrative deficiency in the Complaint. The Complainant filed an amended Complaint on January 6, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 2, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 9, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Panel is satisfied that the Complaint and the evidence accompanying it establish the following factual background. For completeness the Panel notes the Complaint also goes into considerable detail about other matters which the Panel does not consider relevant.
The Complainant is an Israeli company which is a manufacturer and seller of cosmetics and beauty products. As appears below this company in 2015 acquired the assets of a company called “Il Makiage, Inc.”, a New York corporation (hereinafter referred to as “Il Makiage New York”).
Il Makiage New York was founded and owned by a Mr. Harkavi. It was in business for many years as a manufacturer of cosmetics and beauty products. The Respondent2 is the son-in-law of Mr. Harkavi and was between 1999 and 2012 an employee of Il Makiage New York. Il Makiage New York owned US trademark registration no. 1,480,375 in respect of IL-MAKIAGE which was registered on March 15, 1988.
The Respondent, acting on behalf of Il Makiage New York, purchased and registered the Domain Names – on December 31, 1999 and on June 27, 2002. was registered by the Respondent using a privacy service whilst was registered in the Respondent’s own name
On June 28, 2015, most of the assets of Il Makiage New York, including all IL-MAKIAGE trademarks, domain names and all other intellectual property rights were sold to the Complainant. As part of the sale, the Domain Names were to be conveyed to the Complainant.
The Complainant is now the worldwide owner of all IL-MAKIAGE trademarks and their corresponding trademark registrations, including the US registration referred to above, which was assigned to the Complainant.
The Domain Names are still linked to an out-of-date website which corresponds, at least in general terms, to that used by Il Makiage New York at some stage in the past. The Respondent has ignored requests to transfer the Domain Names to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant’s case can be summarised as follows.
a) The Domain Names are identical or confusingly similar to the IL-MAKIAGE trademarks.
b) The Respondents do not have any rights or legitimate interests in the Domain Names.
c) The Respondents’ use of the Domain Names is in bad faith as they have no entitlement to them and are using them as part of an attempt to extort money from the Complainant. Additionally the website to which they are linked will confuse customers and prevents the Complainant from itself using what it says are its Domain Names, which means the Complainant is losing revenue it would otherwise earn. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Preliminary Matters
As a preliminary issue the Panel notes this is a case where one of the Respondents (Domains by Proxy LLC) appears to be a privacy or proxy registration service while the other Respondent (Mr. Rumpler (as stated above, it appears that Mark and Mordechai Rumpler are the same individual)) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9, as follows “Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant”. Accordingly this decision refers to both Respondents although for convenience where the context requires it the term “the Respondent” is used to mean Mr. Rumpler.
The Panel also notes that no communication has been received from the Respondents. However given that the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar the Panel again adopts the approach set out in paragraph 4.9 of the WIPO Overview 2.0, namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint. While the Respondents’ failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondents default (see e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). Substantive Matters
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements in relation to each of the Domain Names:
i. the Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondents have no rights or legitimate interests in the Domain Name;
iii. the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant says that it is the owner of various trademarks consisting of the word or term “il makiage”. Whilst the Panel is not clear on the evidence as to the exact nature and extent of all such trademarks it is satisfied that at least US trademark registration no. 1,480,375 in respect of “IL-MAKIAGE” now belongs to the Complainant.
The Panel holds that the Domain Names are identical (in one case) and confusingly similar (in the other case) to the above trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. It is well established that the specific top level of the domain name (in this case “.com”) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a trademark – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Domain Names are either identical or confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
The evidence filed by the Complainant would appear to suggest that the Respondents do not have any ongoing right or legitimate interest in the Domain Names. However in the absence of a Response and given the Panel’s finding in relation to bad faith (below) the Panel does not need to decide this issue. C. Registered and Used in Bad Faith
The difficulty that the Complainant faces in this case is that the Domain Names were registered by the Respondent on behalf of Il Makiage New York which was at the time the owner of the IL-MAKIAGE trademark. He did so in his capacity as an employee of that company. This fact is specifically alleged by the Complainant itself – to quote from the Complaint “[the Respondent], as an employee of Il Makiage-New York and on its behalf, purchased and registered the domain name www. in 1999 and thereafter www. in 2002”. Under the Policy in order to succeed the Complainant has to establish both that the Domain Names have been registered and are being used in bad faith. It is not sufficient to show that the Respondents’ current use of the Domain Names is in bad faith – it is also necessary to show the registration itself was in bad faith. With two possible exceptions (discussed below) the Complaint fails to make any allegation that the registration of the Domain Names was in bad faith. The Panel does not know why the registration was effected by the Respondent in his own name but does not consider (nor does the Complaint allege) that this alone establishes bad faith. While one would expect that it would soon be transferred to the employer, it is not terribly uncommon to find a domain name being registered, at least initially, on a company’s behalf by an employee who effects the registration in his own name. Unless further factors are present this alone cannot establish bad faith.
The Panel notes that the Complainant seems to suggest that the fact that the Respondent listed “Il Makiage New York” as the “Registrant Organisation” in respect of both Domain Names is in some way significant for the Complainant’s case. To quote from the Complaint: “Indeed, for both of the Disputed Domain Names Rumpler even listed Il Makiage-New York as the ‘Registrant-Organization’”3 . The Panel does not agree that, in the circumstances of this case, this assists the Complainant. Nothing in this arrangement – that is, using an employee name as “Registrant” and the company name as the “Registrant Organisation” in a domain name registration – by itself indicates bad faith on the Respondent’s part (even if it may reflect poor record-keeping and general business practices as far as corporate domain name registrations are concerned).
The Complainant also says that the Respondent’s registration of was via a privacy service so he could “hide his claimed ownership” and appears to suggest this assists its case. The Panel notes and adopts the position stated in paragraph 3.9 of the WIPO Overview 2.0 as follows:
“3.9 Can use of a privacy or proxy registration service form a basis for finding bad faith?
Consensus view: Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. For example, registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the ‘true’ or ‘underlying’ registrant (possibly including that registrant’s actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith. Identification by a registrar or privacy or proxy service of another such service as the purported registrant of the domain name may also constitute evidence of cyberflight and bad faith, as may failure in response to a UDRP provider’s request to timely confirm the identity and contact information of the registrant of the domain name where the registrant listed in the WhoIs is a privacy or proxy service (although such failure would not prevent a panel from deciding such cases, with the privacy or proxy service typically being regarded as the relevant respondent of record).”
In the present case there are no further indicia of bad faith and indeed when subsequently registering the Respondent did not use a privacy service, which is inconsistent with the Complainant’s allegation that he was trying to hide his ownership of the Domain Names. Given that there are many legitimate reasons why a registrant may elect to use a privacy service the Panel declines to find such use establishes bad faith registration in the present case.
The Panel also notes that the Complaint goes into considerable detail about what it says was in effect a failed attempt by the Respondent to purchase the Il Makiage New York business before its assets were ultimately sold to the Complainant. While this may support an inference in the particular circumstances as to the Respondent’s bad faith, the Panel ultimately considers it to speak more to contractual and business matters outside the scope of the Policy.
The Complaint says the Respondent’s retention of the Domain Names (irrespective of their use) is an attempt to extort money from the Complainant. The Complaint does not however provide any evidence supporting this allegation.
Accordingly the third condition of paragraph 4(a) of the Policy has not been fulfilled. In reaching this conclusion the Panel recognises that the Complainant considers it has legitimate grounds for requiring the Domain Names to be transferred to it – however these essentially arise out of what it says is its contractual entitlement following its purchase of the assets of the Il Makiage New York business. Such a claim is not, as such, within the scope of the Policy – which does not contemplate this Panel serving as a tribunal of general jurisdiction over any and all disputes which are somehow related to domain names. The issues raised by the Complainant here exceed the relatively narrow confines of the Policy, which is designed chiefly to address clear cases of “cybersquatting” – see, e.g., Libro v. NA Global Link,WIPO Case No. D2000-0186 – and are properly to be decided by appropriate judicial means as previous UDRP panels have consistently held in similar circumstances – see e.g., Clinomics Biosciences, Inc. v. Simplicity Software, Inc.,WIPO Case No. D2001-0823. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Sole Panelist
Date: February 12, 2016
1 It appears these are alternative names for the same individual.
2 The Respondent (singular) refers to Mr. Rumpler – see further below.
3 As is apparent from this quotation the Complaint alleges this was the case in relation to both Domain Names – that is factually incorrect as can be seen from the WhoIs searches annexed to the Complaint – it was only in relation to that this occurred, although given the Panel’s findings on this issue the distinction does not matter.
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